Intellectual Property Protection and Enforcement Manual - Ipr-policy.eu

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the factory floor that the business has adopted a zero tolerance policy toward counterfeits, and that every employee should be engaged in the fight to protect the integrity and goodwill of the brand. Your Intellectual Property To best protect your intellectual property assets, it is essential to understand the various pieces that make up your IP portfolio. Generally, a company’s IP consists of trademarks, copyrights, patents, and trade secrets owned or used by the company in its business. With respect to brand protection, the critical intellectual property assets, that is, those that go to how consumers recognize a company and its products, are trademarks and copyrights. While discussions of these various forms of IP can and do fill multivolume legal treatises, a thumbnail discussion of each is provided in this manual. Trademarks Trademarks generally consist of a word, phrase, symbol, or design, or a combination thereof, that identify and distinguish the source of the goods of one party from the goods of another. A service mark is accorded the same legal status as a trademark under U.S. law, except that a service mark identifies and distinguishes the source of a service rather than a product. 3 Although it is recommended, registration of a trademark is not required for a business to have rights in the mark. Adoption and use in commerce by a business is sufficient to give rise to common law rights in the mark. Protection for trademarks exists within common law for as long as the mark is properly used. However, greater protection exists for federally registered trademarks, such as the ability for enforcement at U.S. borders. 4 Trademark law also protects “trade dress,” the design and appearance of a product together with all the elements making up the overall image, which serves to identify the product presented to the consumer. Trademark law, however, only protects trade dress that is nonfunctional and either inherently distinctive or has acquired secondary meaning, that is, has come to be recognized by the consuming public as an indicator of source. The elements of trade dress must be capable of being identified with particularity so that the public and competitors will know the exact parameters. 5 Although there are no mandatory notice requirements for trademarks, owners of common law trademarks may use the symbol to provide notice of their claimed rights, while owners of registered marks may use the ® symbol or the designation Reg. U.S. Pat. & Tm. Off. 6 Registration Page 4 Owning a trademark registered on the Principal Register in the U.S. Patent and Trademark Office (the Trademark Office) provides several advantages, including (1) constructive notice to the public of the registrant’s claim of ownership of the mark; (2) a legal presumption of the registrant’s ownership
Brand Protection Manual of the mark and exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration; (3) the ability to bring an action concerning the mark in federal court; (4) the use of the U.S. registration as a basis to obtain registration in foreign countries; and (5) the ability to record the U.S. registration with U.S. Customs and Border Protection (CBP) to aid in the seizure of infringing or counterfeit foreign goods. 7 Protection for a registered mark exists as long as the mark is properly used and its registration is maintained and renewed. Applications to register trademarks can either be filed in hard copy or electronically via the Trademark Office’s Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html. 8 Examination Process Once a trademark application has been filed, the Trademark Office assigns a Trademark examiner to review the application to determine whether the mark can be registered. During the examination period, the examiner may issue “office actions,” raising specific obstacles to registration. Such obstacles may be procedural in nature, for example, seeking a better description of the goods set forth in the application, or they may be substantive. Substantive obstacles include refusals based on the likelihood of confusion with a preexisting registered mark; the use of a name, portrait, or signature of a living individual without consent; the inclusion of immoral or scandalous matter; or the fact that the mark is either a generic term (which can never be registered) or is merely descriptive, that is, would not be recognized by consumers as an indicator of source. 9 The applicant has up to six months to respond to an office action by presenting arguments to convince the Trademark examiner that a refusal was in error. With respect to a descriptiveness refusal, for example, the applicant can introduce evidence to show that the mark has “secondary meaning,” that is, that based on exclusive use, promotion, and sales, consumers do, in fact, recognize the mark as an indicator of source. If the Trademark examiner does not accept the applicant’s arguments, the applicant can appeal the determination to the Trademark Trial and Appeal Board, which will make its own determination of whether the mark should be registered. 10 If the application meets the approval of the Trademark examiner, or if the applicant is ultimately successful on an appeal to the Trademark Trial and Appeal Board, then the mark will be published for opposition in the Trademark Office’s Official Gazette in order to provide third parties with an opportunity to oppose the registration of the mark. 11 If an opposition is filed, an opposition proceeding commences. The proceeding is similar to, albeit not as complex as, a litigation in federal court. The parties engage in discovery, with document requests and interrogatories, take depositions, and, ultimately, submit their evidence and legal memoranda to the Trademark Trial and Appeal Board for determination. Decisions of the board can be appealed to the federal court system. 12 If no opposition is filed, the mark will be registered, and the applicant will receive a certificate of registration in due course. The applicant then becomes responsible for ensuring that the registration is maintained by filing periodic statements of continued use with the U.S. Patent and Trademark Office. 13 Page 5
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Page 25 and 26: Case Studies Brand Protection Manua
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